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Judgment
Trade,"Mark Regn. No.
and Date",Class,Goods Journal,Details
CANON,"164191 dt.
18.05.1954",9,"Photographic
apparatus and
instruments","No. 167 dt.
16.05.1958
CANON
(special type)","408816 dt.
02.08.83",9,"Scientific apparatus
computer disc tapes
etc.","No. 924 dt.
01.12.87
CANON
(special type)","401566 dt.
17.02.83",8,"Hand tools and
instruments, cutlery
forks, etc.","No. 963 dt.
16.07.89
CANON
(special type)","401567 dt.
17.02.83",11,"Installation for
lighting heat and
steam generating etc.","No. 974 dt.
01.01.90
CANON
(special type)","401570B dt.
17.02.83",21,Furniture mirrors etc.,"No. 943 dt.
16.09.88
CANON
(special type)","401571B dt.
17.02.83",21,"Small domestic
utensils and
containers","No. 943 dt.
16.09.88
CANON
(special type)","401573B dt.
17.02.83",23,Yarns and threads,"No. 943 dt.
16.09.88
CANON
(special type)","401574B dt.
17.02.83",24,"Tissue (piece goods)
bed and table covers
and textile
articles etc.","No. 963 dt.
16.09.89
CANON
(special type)","401576B dt.
17.02.83",26,"Lace and embroidery
ribands etc.","No. 943 dt.
16.09.88
CANON
(special type)","401564B dt.
17.02.83",28,"Games and
playthings sporting
articles","No. 968 dt.
01.10.89
CANON,"400136 dt.
17.01.83",16,"All goods in class 16
including paper,
paper articles,
c a r d board and
card board articles,
fountain pen, ball
pens and parts
thereof
and fountain pen
inks.",
(1) that the Appellants are the proprietors of the trade mark CANON in respect of wide range of goods;,,,,
(2) that the said trade mark CANON is registered in various classes;,,,,
(3) that the trade mark CANON applied for registration is identical in all respects and will definitely create confusion among the public;,,,,
(4) that the impugned mark is neither distinctive nor capable of being distinguished in the course of trade;,,,,
(5) that the mark sought to be registered is deceptively similar to that of,,,,
the Appellants; and,,,,
(6) that the registration if granted will be in contravention to the provisions of Sections 11(a), 11(e), 12(1) and 18(1) of the Act.",,,,
The Respondents No. 3 to 5 herein filed their counter statement on 23.4.1996 denying all the material allegations made in the notice of opposition.,,,,
The Respondents No. 3 to 5 have also submitted that they have been carrying on the business of manufacturing and selling geometry box,",,,,
mathematical instruments etc. for the past several years. It is further submitted that they had adopted the mark CANON in 1989 and had been using,,,,
the same since then without any interruption what so ever. It is also submitted that their goods bearing the trade mark had acquired valuable goodwill,,,,
and reputation on account of large sales and prayed that the opposition be dismissed and application be proceeded for registration.,,,,
The Appellants herein had not filed their evidence under Rule 53 of the Trade and Mechandise Marks Rules, 1959 (hereinafter referred to as the",,,,
Rules) in support,,,,
of their opposition but relied on the facts in the notice of opposition. Thereafter, Respondents No. 3 to 5 filed their evidence in support of application",,,,
under Rule 54 of the Rules alongwith Annexures. Subsequently, the Appellants herein filed their evidence under Rule 55 of the Rules. After the",,,,
completion of the formal procedure, the matter was set down for hearing. The Registrar passed the impugned order on the following findings:",,,,
(a) the Registrar had rejected objection under Section 11(a) and 11(e) of the Act on the finding that the Appellant had not filed any evidence to make,,,,
out a case;,,,,
(b) the goods of the Respondents are absolutely different from that of the Appellants;,,,,
(c) the mark CANON is a dictionary word which means a law or rule of the church, the books of the bible accepted by the Christian Church, a clerk",,,,
belonging to cathedral, a list of saints, a musical composition in which one part follows another in imitation, rule, standard and also as per Bargava's",,,,
Concise Dictionary CANON means a rule or law, a kind of type, church decree which can be adopted by anybody; and",,,,
(d) the objection under Section 18(1) of the Act was also rejected on the grounds that the Respondents are lawful and genuine proprietors of the,,,,
impugned mark.,,,,
Aggrieved by the said order, the Appellants had filed the above appeal before the Hon'ble High Court in CM (M) No. 53/2001 and the same has",,,,
been transferred to this Board as per the provisions of Section 100 of the Trade Marks Act, 1999 and renumbered as TA/174/2003/TM/DEL.",,,,
The Appellants being aggrieved by the Registrar's order have filed the instant appeal on the following grounds:,,,,
(a) The impugned order is contrary to the facts and law.,,,,
(b) The Registrar failed to consider the Appellants use and the registrations which are prior to that of the Respondents.,,,,
(c) The Registrar failed to consider the fact that the registration is contrary to the provisions of Section 12(1) of the Act.,,,,
(d) The Registrar failed to consider that as per the provisions of Section 11(a) and 11(e) of the Act, the Appellants trade mark CANON is reputed",,,,
and is within the knowledge of the Respondents. The Respondents are aware of the goodwill and reputation of the Appellants of the trade mark all,,,,
over the world.,,,,
(e) The finding of the learned Registrar that the word CANON is dictionary word and can be adopted by anybody as concurrent user is not correct.,,,,
(f) The finding that the opponents claiming that they have monopoly over the word CANON cannot be accepted as is contrary to law.,,,,
(g) The learned Registrar had failed to discuss the judgment cited by the Appellants.,,,,
(h) The learned Registrar failed to exercise his discretion under Section 18(4) of the Act.,,,,
(i) The Registrar ought to have considered the evidence adduced by the Appellants. The Appellants therefore pray on the above grounds, the appeal",,,,
be allowed setting aside the order of the Registrar.,,,,
The Respondents No. 3 to 5 herein had filed their counter statement denying all the material allegations made in the grounds of appeal. The,,,,
Respondent had stated that they have adopted the trade mark CANON for the reasons that CANON is a dictionary word meaning rule or law. They,,,,
further stated that their adoption was without any intention to defraud any one. Further to prove their honesty, they have also obtained the search",,,,
report where no similar conflicting mark was present in the Registry.,,,,
The main grounds in the counter-statement was that the goods are different. Moreover in the counter statement, the Respondents No. 3 to 5 had",,,,
stated that the Appellants only deal with the electrical and electronic equipments and spare parts and accessories where no goods falling under class,,,,
16 were dealt with. In such circumstances, the Respondents prayed that the appeal be dismissed upholding the orders of the Registrar.",,,,
We have heard learned Counsel for the Appellant Shri N. Mahabir and counsel for the Respondent Shri R.N. Prabhakar on 17th September, 2008",,,,
at the Circuit Bench Sitting at Delhi.,,,,
The learned Counsel for the Appellant submitted that the impugned application was filed on 17.7.90 claiming user since 9.1.89. Within a short span,,,,
of 1 1/2 years the mark could not have acquired distinctiveness and the registration was contrary to the provisions of Section 9 of the Act. The,,,,
Appellant further submitted that on perusal of the sales turn over, the business had not spread over and thus their mark CANON had not acquired",,,,
goodwill and reputation among the public. He also pointed the sales figures and submitted that the sales turn over mentioned were for all the goods out,,,,
of which 15% was received from the goods in class 16. The Appellant submitted that they had mentioned in the affidavit of evidence in reply under,,,,
Rule 55 of the Rules filed before the Registrar about their sales and their reputation and had filed subsequent bills, invoices, publicity materials in proof",,,,
of the same. He also brought to our notice, the various invoices both in India as well as abroad and Annexure-E was brought to our notice to show",,,,
that they had entered into an agreements with the special committee of Asian Games 1982 to set up ""Service Depots"", free of cost for checkup and",,,,
repair of still camera equipments brought by the press photographers, the games officials etc. to prove that their trade mark CANON was well",,,,
recognized not only abroad but also in India. The Appellant submitted that their mark CANON in class 16 was registered in India. There was force in,,,,
the contention of the Appellant that though the Registrar had recorded that documentary evidence were filed but the same was not considered as the,,,,
documents were filed in reply to the affidavit of evidence in support of application where the Respondent herein had no opportunity to rebut the same.,,,,
The learned Counsel relied on various judgments in support of his case:,,,,
2008 (37) PTC 145 (IPAB), Sushil Jindal Trading as M/s. Sushil Electricals v. Jindal Electricals and Anr., was relied on to say that the adoption and",,,,
subsequent user of the mark if prove to be dishonest no amount of user will help applicants. AIR 1991 Bom 76 : 1991 (11) PTC 217 (Bom) (DB),",,,,
M/s. National Chemicals and Colour Co. and Ors. v. Reckitt and Colman of India Ltd. and Anr. Applicant knowing the existing trade mark of the,,,,
opponent already registered cannot be allowed to continue to use the same at subsequent date and such user cannot be considered as honest,,,,
concurrent user. The counsel relied on the order passed in OA/432005/TM/KOL passed by this Hon'ble Board where CANON was considered to be,,,,
well known mark and that it is got to be protected against use of the identical mark by anyone else even in different class of goods. PTC (Suppl)(1) 13,,,,
(SC), Corn Products Refining Co. v. Shangrila Food Products Ltd., was relied on to say that when there are series of marks containing the common",,,,
elements will not help the applicant when their use in the market is not proved.,,,,
(1993 PTC 75) M/s. F.M. Diesels Ltd. v. M/s. S.M. Diesels - was relied on to say that the Plaintiff being prior user of the mark, the use of the same",,,,
by the Defendant is likely to cause confusion and deception among the people.,,,,
The learned Counsel for the Respondent mainly contended that the documents filed in reply cannot be taken into consideration as Rule 55 of the,,,,
Rules only provides for the opponent to file affidavit of evidence only and no new documents can be taken on record and that the Registrar was,,,,
correct in not taking the documents on record and dismissing the opposition as sufficient evidence was not filed. The counsel also submitted that,,,,
though the Appellant had stated that the mark has been registered in class 16 no such documents was filed before the Registrar or before this,,,,
Appellate Board. The counsel also submitted that the Appellant had not filed documents to prove their goodwill or reputation. The counsel further,,,,
submitted that though the Appellant contentions is that they had the mark registered under several classes, there is no proof to say that they had been",,,,
using their mark. The counsel further stated that the mark has been rightly registered under Section 12 of the Act.,,,,
The counsel for the Respondent relied on the following judgments:,,,,
AIR 1978 Del 250 : PTC (Suppl)(1) 720(Del)(DB) Century Traders v. Roshan Lal Duggar and Co. and Ors. - was relied on to say that to establish,,,,
user of the mark prior in point of time, the registration of mark is not relevant but user has got to be proved. The counsel also relied on the passage",,,,
from the Trade Marks Act by Dr. Venkateswaran at page 151 and submitted that the onus is on the opponent to establish reputation of the mark,,,,
which has not been proved by the Appellant herein.,,,,
1997 PTC (17), Glaxo India Ltd. v. Eudora Laboratories Pvt. Ltd., The counsel relied on to say that when the mark has been in continuous use by the",,,,
Respondent, the Appellant cannot take advantage of the prior registration of the trademark.",,,,
The learned Counsel for the Appellant in rejoinder submitted that the finding the word CANON has a dictionary meaning was the Registrar's own,,,,
version which was not stated in the counter-statement before the Registrar and the same has been mentioned by the Respondent only in the counter-,,,,
statement filed in the appeal which plea ought not be considered.,,,,
We have carefully considered the arguments of both the counsel and have gone through the pleadings and documents.,,,,
The issue that arises for consideration is whether the rejection of the objections under Sections 11(a), 11(e) and 18(1) of the Act sustains. The",,,,
Registrar has rejected the opposition under Section 11(a) and 11 (e) of the Act on the ground that the Appellant has not filed any sufficient evidence,,,,
to prove the issue of deception and confusion to make out a case. Now the short question is whether the marks are similar and if the Respondent is,,,,
allowed to use the same whether there will be confusion or deception. There is no doubt that the marks are identical and the goods are,,,,
similar/identical. When the marks are identical the next issue will be to consider the fact as to who is the prior user whether the Appellant or the,,,,
Respondent. On perusal of the pleadings it is clear that the Appellants have adopted and used the trade mark since 1950 whereas the Respondents,,,,
adopted the trade mark only in the year 1989. The Respondents have not disputed the fact that the Appellants are prior user of the trade mark,,,,
CANON"" except the contention that the goods are different. In such circumstances, we fail to understand why the Registrar has taken the view that",,,,
there was no evidence to prove user and so there was no possibility of confusion or deception.,,,,
The only contention of the Respondent was that the goods are different. On going through the pleadings the Appellants have stated that the trade,,,,
mark CANON had acquired the status of a well known mark which was not considered by the 1st Respondent. The Appellants have also stated that,,,,
the impugned trade mark was registered in various classes and also in respect of class 16.,,,,
While dealing with the issue of confusion and deception the similarity of the marks are to be considered as a whole mark. Here, the marks are",,,,
identical and the goods are similar/identical. When that be so, the class of customers are to be considered. Illiterate class of people are also likely to",,,,
deal with the products either as consumer by themselves or as purchasers for their masters. Such people will not be able to distinguish between the,,,,
rival ones. Hence there will be definitely confusion and deception in the minds of the consumers and, therefore, the objection under Section 11(a) and",,,,
11(e) of the Act sustains.,,,,
The argument that the goods are different has been considered in various judgments and the familiarly known Benz Case - AIR 1994 Del 239 :,,,,
1994 (14) PTC 287 (Del), Diamler Benz Aktiegesellschaft v. Hypo Hindustan - The Delhi High Court has held that the Trade Mark Benz was",,,,
extensively used with respect to automobiles produced by the Plaintiffs and the Plaintiffs therein have built up a well reputation and goodwill for their,,,,
automobiles through the said trade mark ""Benz"". In such circumstances, the use of such identical mark ""Benz"" by the Respondents with respect to",,,,
under garments will lead to confusion in the market, although the manufacturers of Mercedes Benz Cars were neither manufacturing nor selling",,,,
garments nor underwear apparels. The Appellants have also stated that though the goods are different their reputation has got to the considered on the,,,,
above principles as also decided in the Caltax Case which was not considered by the Registrar in the impugned order.,,,,
According to the principles laid down in the above cases it is for us to consider whether the Appellant has built up a reputation and goodwill in the,,,,
market and whether by such use by the Respondents No. 3 to 5 there will be confusion in the market. Considering the fact that the trade mark has,,,,
acquired the status of a well known mark as stated in the Notice of Opposition and the ground of appeal, which has not been denied by the",,,,
Respondents No. 3 to 5 we are of the view that the same has got to accepted. It has been the general view and settled principle that where trade,,,,
mark is determined to be well know in atleast one relevant section of the public in India by any Court or register, the same shall be considered as a",,,,
well known mark. The Appellants has relied the judgment of this Board in OA/43/2005/TM/KOL in support of this principle. In such a case a well,,,,
known mark has got to be protected. 'As per the principles laid down in the Benz case the marks when identical, the Respondents No. 3 to 5 cannot",,,,
be permitted to have the registration. We therefore find that the order of the Registrar is not in order as regards the finding that the goods are,,,,
different.,,,,
We shall also deal with the issue as to the finding of the Registrar as the documents filed alongwith the reply affidavit cannot be considered as per,,,,
the provisions of Rule 5 of the Rules. The Apex Court and the other Courts have been of the view that evidence should not be shut down at any,,,,
stage. Here we find that the documents filed are the annual reports, advertisements and bills to show their use. We are of the view that the",,,,
Respondents No. 3 to 5 can have no objection for filing those documents of the Appellant and the Registrar could have considered the same. We also,,,,
do not find any merit in the submission of the Respondents No. 3 to 5 that a search was made and no conflicting mark was available as it is not,,,,
supported by any evidence.,,,,
The Respondents No. 3 to 5 have not disputed the fact that the Appellant use is prior to that of the Respondents No. 3 to 5. The only submission is,,,,
that there was no mark pending or registered where a search was made. In such circumstances the Appellants are prior user and the Respondents,,,,
No. 3 to 5 cannot claim proprietorship right as per Section 18(1) of the Act. The order under Section 18(1) of the Act also fails.,,,,
We also quote the observations made in OA/43/2005/TM/KOL here, ""The mark ""CANON"" is an essential part of the corporate name of the",,,,
Appellant before us. The mark ""CANON"" gives an indication of the origin of the goods emanating from or relating to the Appellant. If the",,,,
Respondents No. 3 to 5 mark is allowed registration undoubtedly it is bound to cause confusion in the mind of the public that the goods of the,,,,
Respondents No. 3 to 5 with the identical trade mark has connection with the registered proprietor of the mark, in the case on hand, the Appellant.",,,,
Therefore, the Respondents No. 3 to 5 cannot be allowed to register the mark ""CANON"" of which the Appellant is the registered proprietor"". The",,,,
observation squarely applies to the case on hand and we are of the view that the impugned trade mark ""CANON"" cannot be allowed to be registered.",,,,
We therefore find no reason to sustain the order and the same is liable to be set aside.,,,,
The impugned order is set aside and the appeal is allowed. No order as to costs.,,,,